OPPOSITION No B 3 060 218

Rota Retail C.V., Bosstraat 1, 9160, Lokeren, Belgium (opponent), represented by De Clercq & Partners, Edgard Gevaertdreef 10 a, 9830, Sint-Martens-Latem, Belgium (professional representative)

a g a i n s t

Somna AB, Panelvägen 16, 443 61 Stenkullen, Sweden (applicant), represented by Hynell Intellectual Property AB, Järnvägsgatan 2, 683 30 Hagfors, Sweden (professional representative).

On 04/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 218 is upheld for all the contested goods.

2. European Union trade mark application No 17 888 612 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 888 612 (figurative mark). The opposition is based on, inter alia, Benelux trade mark registration No 403 926 ‘SLEEPY’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Benelux trade mark registration No 403 926.

a) The goods

The goods on which the opposition is based are the following:

Class 20: Beds and parts thereof; bedding, except linen, mattresses, spring mattresses, pillows.

Class 22: Padding materials for bedding and pillows (not of rubber or plastics), including loose feathers and down.

Class 24: Bed linen, including sheets, bed blankets, bed pads, duvet covers, throws, pillowcases and tick.

The contested goods are the following:

Class 10: Cervical collars; quilts, blankets, vests and collars of varied pressure for medical use; quilts, blankets, vests and collars of varied weight for medical use; Cushions for medical purposes.

Class 24: Quilts filled with stuffing materials; weighted blankets; bed covers.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Also, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 10

The contested cervical collars; quilts, blankets, vests and collars of varied pressure for medical use; quilts, blankets, vests and collars of varied weight for medical use; cushions for medical purposes are similar to at least a low degree to the opponent’s bed linen, including sheets, bed blankets, bed pads, duvet covers, throws, pillowcases and tick in Class 24 and the opponent’s pillows; mattresses in Class 20. Although the majority of the contested goods are of a medical nature and the opponent’s goods are for general rest purposes, the relevant public for the goods may coincide. The intended purpose of the goods coincides in that, while the applicant’s goods have a medical purpose, they are also fundamentally designed to enable rest and sleep, in the same way as the opponent’s goods. Likewise, they also have the same method of use. While the distribution channels of the goods normally differ, it is possible that the producers of both standard and medical bed linen and pillows may be the same. In addition, it should be pointed out that the contested goods will not only be purchased by hospitals or rest homes, but also by members of the general public in order, for example, to care for elderly people at home or for homecare in general.

Contested goods in Class 24

The contested Quilts filled with stuffing materials; weighted blankets; bed covers are identical to the opponent’s bed linen, including sheets, bed blankets, duvet covers, throws either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar to at least a low degree are directed at the public at large. Bearing in mind that part of the relevant goods are items with a specific medical purpose and such goods are not bought on an everyday basis, the degree of attention of attention is high. As regards other goods such as pillows (not for medical purposes) or the goods in Class 24, the degree of attention is considered to be average.

c) The signs

SLEEPY
Earlier trade mark	Contested sign

The relevant territory is Benelux.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, ZIRH, EU:T:2004:62, § 36).

The earlier mark is a word mark consisting of the single element ‘SLEEPY’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the sign is represented in upper or lower case characters. The contested sign is figurative and consists of the verbal element ‘sleepie’, written in green letters in a relatively standard font, wherein the letters ‘ee’ have a small protrusion in the middle.

The marks have no element(s) that could be considered clearly more dominant (visually eye-catching) than other element(s).

The common element ‘SLEEP’ is not meaningful in certain parts of the Benelux territories. For example, it will not be understood by the French-speaking part of the public, as it is not a basic English word and therefore it is highly likely that it will not be associated with the respective English term within the signs. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public, which will perceive the verbal elements of the signs as fanciful terms with no particular meaning. Consequently, the inherent distinctive character of the verbal elements of the signs is normal.

As regards the slight stylisation and colour of the verbal element of the contested sign, it must be mentioned that, they are ornamental and not particularly unusual or striking and their distinctiveness is limited, at best. Therefore, the verbal element of the contested sign is, in principle, more distinctive/important than the mentioned figurative features.

Visually, the signs coincide in the sequence of letters ‘SLEEP-’, which represent the first five letters of the inherently distinctive verbal elements of both signs. The signs differ in their ends, namely ‘Y’ vs. ‘IE’, as well as in the stylisation and colour of the contested sign, having a limited distinctiveness, at best. The first parts of the conflicting marks are identical. Consumers generally tend to focus on the initial part of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Taking into account that the signs have the same beginnings and have a similar overall length, it is considered that they are visually similar to a higher than average degree.

Aurally, the pronunciation of the signs coincides in full, because their endings, in spite being composed of different letters (‘Y’ vs. ‘IE’) are pronounced with the same sound. Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The applicant’s goods are identical and similar to at least a low degree to the opponent’s goods. The relevant goods are directed at the public at large and the degree of attention varies from average to high.

The signs are visually similar to a higher than average degree. They are aurally identical and the conceptual aspect is neutral, that is, the conceptual aspect does not influence the assessment of the similarity of the signs.

In the present case, it is considered that the differences between the signs are not capable to offset the high degree of similarity between the signs and a likelihood of confusion exists. While it is true that the signs differ in certain aspects, the coincidences in the marks prevail and are focused in their beginnings. Furthermore, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Also, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In view of the foregoing and taking into account all the relevant circumstances of the case, also the imperfect recollection principle and the interdependence principle between the relevant factors, the Opposition Division concludes that the signs are sufficiently similar to induce a likelihood of confusion on the part of the relevant public even in relation to the lowly similar goods.

Considering all the above, there is a likelihood of confusion on the part of French-speaking part of the relevant public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public in the Benelux is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 403 926. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Benelux trade mark registration No 403 926 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Jakub MROZOWSKI

Liliya YORDANOVA

Gueorgui IVANOV

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.